What is a Common Law Trademark in Florida?

If you are investigating a new trademark for the name of your company, product, or service line, you may hear a lawyer talk to you about common law or unregistered trademarks.

Many people tend to overlook the help of an expert intellectual property attorney to proceed with the proper trademark diligence a preventive approach.

Entrepreneurs who do not take time to proceed with a detailed trademark search are exposed to risk, such as having a problem years later that they never thought could exist.

In this article, you will find out what a common law trademark is and how to avoid issues associated with trademark use.

What are Common Law trademarks? – In Layman’s Terms

In the United States, you do not have to federally register your trademark with the US Patent and Trademark Office (USPTO) to acquire rights in a particular name, logo, or slogan.

This way, if a company in Florida simply sells products or offers services under a particular name, logo, or slogan, they can acquire a common law trademark.

The best way to think about a common law trademark is by comparing it with common-law marriage. Under common law marriage, if you live together with someone long enough, you are sort of assumed married by the state.

Similarly, if you use a trademark within a certain area for long enough, so that people hear a name/see a logo and think of your business, you have acquired common law trademark rights.

Regardless, entrepreneurs must take time to proceed with the proper trademark search if they are considered a new name for a business.

Is it Necessary to Register a Trademark with USPTO?

In essence, a common law trademark is a right acquired by a certain business to use a specific name, sentence, or logo that is often associated with that company’s products/services.

Indeed, it is possible to have common law trademark rights without having a trademark federally registered. However, a company can only enforce its rights within a certain area, where the business uses the trademark (e.g., South Florida).

On the other hand, a federally registered trademark is enforceable anywhere in US territory.

Another advantage of using a federally registered trademark is re-enforcing a company’s reputation. For example, a company that uses a common law trademark can use the ™ symbol, while the ® symbol is available only for federally registered trademarks.

Establishing a Common Law Trademark in Florida – What You Need to Know

Enacted in 1946, the Lanham Act is the federal statute that governs trademarks and service marks. Courts in Florida provide that “protection will be extended to the first appropriator of a name, within the territorial scope of its business, against subsequent use of the same or similar name by another.”

Additionally, regardless of statutory registration requirements, trademark rights exist under common law, as they are mainly established by demonstrating prior use of a specific name, logo, etc.

In Florida, businesses can establish common law trademark ownership rights by actual and continuous use of a trademark in commercial activities.

In this context, the Supreme Court of Florida has established that “there must be a use of such length and publicity as to show an intention to adopt the mark as a trademark.”

Is it Possible to Establish a Common Law Trademark Infringement in Florida?

Indeed, it is possible to establish a common law trademark infringement in Florida. In fact, even a federal trademark registration can be challenged for the first five years of its registration.

To illustrate this concept, let us say there a company called “Ray’s Delicatessen” in South Florida. After a year of hard work, the company starts to grow and its owner decides to federally register their trademark.

However, the owner knows that there is a business out in Texas that has been using the same name (Ray’s Delicatessen) for years, since before the existence of the company in Florida.

Subsequently, after three years, the company grows even further and expands up and down the state of Florida. Then, the homonymous company in Texas proceeds with a USPTO registration process.

Nevertheless, they get refused, as the Florida-based company already possesses a registration on the same name.

In such a case, the Texas-based company can petition to cancel the federal registration of the other company, based on grounds they have prior common-law use of a trademark that predates the existence of the Florida-based company.